Guest Post: Of Recipes and Patents

Due to some issues with the site, we had put a hold on our SpicyIP Fellowship applicant series but we’re back now and will get through the remaining ones as quickly as possible. Kiran Mary George, a 2nd year student at ILS, Pune, brings us her third entry with this post looking into the questions of whether recipes can be patented or not. Her previous two entries included “The Smell Mark Conundrum” and “The iPhone v iFon conflict“. [The deadline for submission of entries for our Fellowship application has now passed. We shall be going over the submissions received thus far and will announce the winners soon].

Of Recipes and Patents

By: Kiran Mary George

Can recipes be patented?

“We make and sell the best!” You’ve heard it before. But can the culinary highbrows who create the best butter chicken et all obtain a patent on them, and exclude everybody else from making, using or selling their palatable creations?

Food recipes may often be disregarded when the subject of inventions comes up, no matter how inventive the approach is. Chefs across the world often spend weeks coming up with signature dishes that come to define their restaurants, and then learn of their dish being ‘plagiarized’ elsewhere without so much as credit for the same.

Little of the food world as we know it today is new. You can’t really ‘own’ a recipe in its totality. Every other dish is the culmination of hours spent adapting and re-adapting a decades-old creation to whip up something that adequately appeals to modern taste and choice – “we’re all standing on the shoulders of chefs who came before”. However, if you can effectively introduce a novel, innovative step in a recipe and transform it, then patenting the recipe just might be possible, although it is an arduous task at best.

The Holy Trinity of patent requirements as under the Indian Patent Act, 1970 must be fulfilled before the recipe is awarded a patent.

Is the recipe novel?

Is the recipe original, or does it constitute an improvement on an existing dish? Section 2(j) defines an invention as a new step or process, capable of industrial application.

There may either be process or composition claims involved with regard to a recipe, both of which rarely fulfill the need for establishing novelty for the reasons mentioned earlier .

In a process claim for patenting a recipe, establishing that the steps involved are counter intuitive and perhaps seeking to address a problem could effectively bring forth the ‘novel’ aspect of the recipe. For example, General Mills Inc added a twist to the standard dough recipe, and recently filed an international process patent claim for gluten free, ready-to-bake pizza, cookie and pie dough, introducing a novel element to standard dough.

Further, where process patent claims are involved, if the procedure to create a dish involves the use of age-old cooking processes like heating, grilling, frying, freezing is found to be novel, and involving an inventive step central to the recipe invented sought to be patented, such a procedure could easily be interpreted as being patentable – for instance, the Indian patent (209015) awarded for the novel fermentation process involved in the production of tender coconut wine or the US patent (US7998517) granted to NYC’s Chef Burke for inventing a meat aging process.

Further, the invention must not have been existing in the body of prior art – there must not have been publication, presentation or public disclosure of the recipe before the filing date so as to prevent the prior art from being patented again. Of course, when speaking of food recipes, it could be considerably difficult to differentiate say, a new chocolate chip cookie recipe from an existing one.

That said, with regard to recipes, as elucidated earlier, the reality remains that, exceptions aside, in most cases, there is often some prior art in existence from which the recipe has been derived –the question, however, is how close the prior art is to what is sought to be protected, where; the product or process falling within the scope of the claim must not be an inevitable result of carrying out what is described in the prior art. Only if the prior art shows every element of a claim, is the recipe claim is unpatentable as anticipated by the prior art. Standing testament to this is P&G’s 1984 patent on crispy chewy chocolate chip cookies produced upon baking of a “laminated dough structure” was upheld by the Court. Although the term has not been separately defined under the Indian Patent Act, it is to be understood by the provisions of Section 13 (Search for anticipation by previous publication before date of filing and by prior claim on or after date of filing) as read in consonance with corresponding provisions to the same in Chapter VI, Sections 29 to 34 of the Act.

Is the recipe useful?

An invention is held to be useful when it has utility, and is capable of industrial application. Utility most often does not need to be explicitly established, because it is considered inherent in whatever is sought to be disclosed. A lacking, however, may arise in this area when the product fails to disclose sufficient information so as to make any specific or significant utility apparent, in which case utility may need to be separately established. However, all recipes inherently comprise an edible nutritional composition, and are capable of being used in an industry – its utility, thus, remains presumed.

Is the recipe inventive and non obvious?

Under Section 2(1)(ja), for a process or step embodied within the patent to be considered inventive, it must satisfy two conditions – a) it must add to existing technical knowledge and/or assume greater economic significance, and b) it must be non obvious to a person skilled in the art.

Firstly, the recipe sought to be patented cannot be a “mere admixture of substances resulting in aggregation of properties of the components” [Section 3(e)]. The components and processes that make the final product, when pulled apart to analyse the dish as it is, must not be a basic rearrangement of what is already known to exist. In the case Bishwanath Prasad Radhey Shyam v. M/s Hindustan Metal Industries, AIR 1982, SC1444 the Supreme Court held that “for an improvement on something known before or a combination of matters already known” to be considered as an inventive step, it must be the result of more than a “workshop improvement” on an existing invention – it must independently satisfy the test of an invention or inventive step. If the invention comprises known substances, the result must be better or economically more viable than what previously existed.

Secondly, the ingenuity of the food creation chosen for a patent must be such that it remains non obvious to a cook or a chef (quite unlike The Uncrustables) upon assessment of the product as a whole, and not its individual elements alone. In Bishwanath Prasad and Ors. vs. Dwarka Prasad and Ors. (30.10.1973 – SC), it was held that the invention must not be an obvious or natural suggestion of what was previously known. Indian courts have in the past, recognized the test laid down in Halsbury Laws of England that an invention does not involve an inventive step, if for purposes obvious to the skilled worker, given the state of knowledge existing at the time, he would make the invention himself. In the patent case of Enercon(India) Limited vs Alloys Wobben(England),the bench further observed that the determination of inventive step lay in whether a non inventive mind of an ordinary person skilled in the art would have thought of the alleged invention. If the answer is in the affirmative, the test of non obviousness fails.

While there may be alternatives to patents as a form of protection in this regard, they are found to be centred on extrinsic elements concerning the dish, and not the functionality of the dish itself.

• Copyright, for instance, will allow protection of only the written expression of the recipe, and not the dish itself.
• Trade secrets might work for corporations like Coca Cola, but in today’s era of cookery shows and cookbooks, chefs stay away from keeping their recipes trade secrets, because their work models live off of public exposure.
• Trade dress focuses on protecting the entire selling image (2006(32) PTC 332 (MRTPC, Del)) and has far too broad a scope to only protect individual dishes by themselves.

The admissibility of patent claims really is a needle-in-the-haystack scenario – a specific claim pertaining to a specific element in the preparation or composition of the dish must be identified. The narrower the claim, the higher are the chances of it succeeding. The culinary industry, which largely survives on a free flow of ‘inspired’ and ‘improvised’ recipes – might, however, find it difficult to fulfil the strict patentability standards and high costs that preclude patent registration – exactly why patenting a recipe is nothing short of an uphill battle.